2017 May

AIPLA Provides Legislative Proposal on Patent Eligible Subject Matter

May 17, 2017

The AIPLA has provided a new Legislative Proposal and Report on Patent Eligible Subject Matter under 35 U.S.C. § 101. This report urges congressional action to overhaul, and indeed expressly overrule the current judicially created framework under section 101 in light of recent jurisprudence from the Supreme Court and other lower Courts applying the new standard.

You can read the full Proposal here.


Magistrate Judge in Eastern District of Texas Adds to the Developing Jurisprudence of Estoppel in the Context of IPRs and 35 U.S.C. § 315.

May 16, 2017

A magistrate judge in the Eastern District of Texas has recommended to the Court on May 11, 2017 that Microsoft be estopped from raising certain defenses at trial stemming from a total of six (6) IPRs filed by Microsoft against the patent owner Biscotti Inc.

Specifically, the magistrate judge states that:

Section 315(e) estops Microsoft from asserting at trial: (1) grounds for which the PTAB instituted IPR and determined those grounds to be insufficient to establish unpatentability after a trial on the merits; (2) grounds included in a petition but determined by the PTAB to not establish a reasonable likelihood of unpatentability (in other words, administrative review on the merits of a ground); and (3) grounds not included in a petition that a “skilled searcher conducting a diligent search reasonably could have been expected to discover.” See, e.g., 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011) (statement of Senator Jon Kyl); see also Clearlamp, LLC v. LKQ Corp., No. 12 C 2533, 2016 WL 4734389, at *9 (N.D. Ill. Mar. 18, 2016) (adopting the skilled searcher standard). As for the third category, the Court agrees with the Delaware court when it remarked, “extending [Shaw’s] logic to prior art references that were never presented to the PTAB at all (despite their public nature) confounds the very purpose of this parallel administrative proceeding . . . .” Intellectual Ventures I, Case No. 13-CV-00453-SLR, Dkt. No. 559 at 26-27. Finally, Microsoft is not estopped from asserting grounds included in a petition but which the PTAB found redundant or declined to institute review for another procedural reason. See Shaw, 817 F.3d at 1300; HP, 817 F.3d at 1347.

p. 13-14.

Read the full Report and Recommendation here.